Ex Parte Duranton et al

Board of Patent Appeals and Interferences

Aug 30, 2012

10243734 (B.P.A.I. Aug. 30, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte ALBERT DURANTON and OLIVIER DE LACHARRIERE
__________

Appeal 2011-008374
Application 10/243,734
Technology Center 1600
__________

Before LORA M. GREEN, JEFFREY N. FREDMAN, and
ERICA A. FRANKLIN, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to a
process for promoting the growth of body and/or cranial hair on a
mammalian organism. The Patent Examiner rejected the claims as failing to
comply with the written description requirement, as lacking enablement, as
anticipated, and as obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

Appeal 2011-008374
Application 10/243,734

2
STATEMENT OF THE CASE
Claims 1, 8, 12, and 18 are on appeal. The claims read as follows:
1. A process for promoting the growth of body and/or cranial hair on a
mammalian organism in need of such treatment, comprising administering to
such organism a therapeutically effective amount of at least one
lipoxygenase inhibitor, wherein said at least one lipoxygenase inhibitor is
not selected from the group consisting of a redox inhibitor, an antioxidant,
an imidazole-containing compound, an eicosanoid inhibitor, a calcium
blocker, HONHCOCH2CH(n-Pentyl)COLeu-PheNH2,
HONHCCH2CH(n-Pentyl)COLeu-AlaNH2,
HONHCOCH2CH(i-Butyl)COLeu-PheNH2,
HONHCOCH2CH(n-Pentyl)COVal-AlaNH2, and a cyclooxygenase
stimulator.

8. The process of claim 1, wherein the lipoxygenase inhibitor is
administered topically or systemically.

12. The process of claim 1, wherein at least one lipoxygenase inhibitor is
selected from the group consisting of a non-redox inhibitor, an iron-
chelating agent, and a benzopyran compound.

18. The process of claim 12, wherein at least one lipoxygenase inhibitor is
an iron-chelating compound selected from the group consisting of a
hydroxamic acid or derivative thereof, an N-hydroxyurea, 2-benzyl-1-
naphthol, a hydroxylamine, carnosol, sulfasalazine, N-(1-Benzo[b]thien-2-
ylethyl_N-hydroxyurea, 5-hydroxyanthranilic acid and a
4-(ω -arylalkyl)phenylalkanoic acid.

The Examiner rejected the claims as follows:
• claims 1, 8, 12, and 18 under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement;
• claims 1, 8, 12, and 18 under 35 U.S.C. § 112, first paragraph, as
lacking enablement;
Appeal 2011-008374
Application 10/243,734

3
• claim 18 under 35 U.S.C. § 102(b) as anticipated by Gibson;
1
and
• claims 1, 8, 12, and 18 under 35 U.S.C. § 103(a) as unpatentable
over Gibson.
NEW MATTER
The Examiner’s position is that the recitation in claim 1 excluding
four hydroxamic acid dipeptide compounds constitutes new matter because
none of these compounds was described in the Specification, nor was any
genus that clearly encompassed these specific compounds. (Ans. 4.)
Appellants contend that the negative limitation at issue is supported
by the Specification disclosure of hydroxamic acids. (App. Br. 4.)
According to Appellants, they have merely claimed less than the full scope
of their invention by reciting the negative limitation at issue. (Id.)
After considering all the evidence and arguments, we agree with the
Examiner that claim 1 contains new matter. The Specification states that
“[t]he lipoxygenase inhibitors are advantageously selected from among the
redox and non-redox inhibitors, redox inhibitor precursors, antioxidants,
iron-chelating agents, imidazole-containing compounds, phenothiazines and
benzopyran derivatives, as well as from certain eicosanoids.” (Spec. 8, ll.
21-26.) The Specification also states that “[t]he iron-chelating agent is
advantageously selected from among the hydroxamic acids and derivatives
thereof, N-hydroxyureas, 2-benzyl-1-naphthol, catechols, hydroxylamines,
carnosol, naphthol, sulfasalazine, zileuton, 5-hydroxyanthranilic acid and 4-
(ω -arylalkyl) phenylalkanoic acids.” (Id. at 9, ll. 18-23.) However, as the
Examiner reasoned, the Specification does not describe any of the excluded

1
US Patent No. 5,015,470 issued to Walter T. Gibson, May 14, 1991.
Appeal 2011-008374
Application 10/243,734

4
compounds in such a way as to reasonably convey to one skilled in that art
that the inventors, at the time of the application was filed, had possession of
the claimed invention. (See Ans. 4.) See MPEP § 2173.05(i) (“The mere
absence of a positive recitation is not basis for an exclusion.”).
Accordingly, we affirm the rejection of claims 1, 8, 12, and 18.

ENABLEMENT
The Examiner found that the “[S]pecification asserts that
lipoxygenase inhibitors in general will be effective to promote hair growth,”
and that “compounds such as hydroxythiazoles, benzopyrans, naphthol,
carnosol, N-hydroxyurea and catechols will also be effective to promote hair
growth.” (Ans. 4-5.) However, the Examiner’s position is that “there is no
evidence that lipoxygenase inhibitors in general will be effective to promote
hair growth, or that any specific compounds (which also happen to be
lipoxygenase inhibitors) will promote hair growth.” (Id. at 5) (emphasis
added.) According to the Examiner, “undue experimentation would be
required to determine which compounds are lipoxygenase inhibitors, and of
those, which will promote hair growth.” (Id.) The Examiner reasoned that
even if an artisan could identify which compounds are lipoxygenase
inhibitors, the artisan would still be left to determine which of those
inhibitors, if any, will be effective to promote hair growth. (Id. at 5-6.) The
Examiner found that the Specification did not provide “working examples”
nor guidance in this regard. (Id. at 6.)
Appellants contend that the claimed invention would not require a
skilled artisan to perform undue experimentation because the Specification
includes multiple assays that may be used to determine lipoxygenase activity
Appeal 2011-008374
Application 10/243,734

5
quickly and effectively, the level of skill in the art is high, and a number of
illustrative examples of compounds suitable for use in the claimed invention
are provided. (App. Br. 5-6.)
We agree with Appellants and therefore reverse the enablement
rejection of claims 1, 8, 12, and 18. See In re Wright, 999 F.2d 1557, 1561-
1562 (Fed. Cir. 1993)(The Examiner has the initial burden to establish a
reasonable basis to question the enablement provided for the claimed
invention.).

ANTICIPATION
The Examiner found that Gibson disclosed various hydroxamic acids
that are effective to promote hair growth. (Ans. 6.) According to the
Examiner, claim 18 encompasses any hydroxamic acid, and any derivative
of a hydroxamic acid, so as to supersede the exclusion in claim 1. (Id. at 6-
7.)
Appellants contend that “[t]he limitation in claim 1 excluding [the]
hydroxamic acids reported in Gibson… is also necessarily a limitation of
claim 18.” (App. Br. 6.) According to Appellants, claim 18, therefore, does
not read on Gibson. (Id. at 7.) Further, Appellants assert that “there is no
indication that the hydroxamic acids proposed by Gibson are lipoxygenase
inhibitors” and that the Examiner has not established that such activity is an
inherent feature of the Gibson’s disclosed compounds. (Id.)
We agree with Appellants that the negative limitation in claim 1 is
also a limitation of dependent claim 18. Thus, because Gibson disclosed the
use of hydroxamic acids excluded by the negative limitation of claim 1,
Gibson does not anticipate claim 18.
Appeal 2011-008374
Application 10/243,734

6
Accordingly, we reverse the anticipation rejection of claim 18.
OBVIOUSNESS
The Examiner’s position is that Gibson disclosed that various
hydroxamic acids are effective for promoting hair growth. (Ans. 7.) The
Examiner found that while the specific hydroxamic acids disclosed by
Gibson are among the excluded compounds in instant claim 1, there are
“obvious variants” of these compounds, e.g., differing by just one methylene
group, or replacing a phenylalanine with phenethylglycine, that circumvent
the exclusions of instant claim 1. (See id. at 7-8.) According to the
Examiner, a skilled artisan would have expected such close structural
homologs to retain the activity of the specific compounds disclosed in
Gibson. (Id. at 8.)
Appellants contend that Gibson only disclosed four hydroxamic acids
which “were all purportedly selected due to their strong proteoglycanase
inhibition.” (App. Br. 8.) Appellants assert that “[t]here is nothing in
Gibson to suggest the desirability of the modifications” proposed by the
Examiner, nor evidence that such modifications would have resulted in
compounds that would have maintained “the strong proteoglycanase
inhibition that is required by Gibson.” (Id. at 8-9.) According to Appellants,
“[a]dding the methyl groups or replacing phenylalanine with
phenethylglycine could disrupt the principle of operation disclosed by
Gibson, making the resulting compounds unsuitable for Gibson.” (Id. at 9.)
After considering all the evidence and arguments, we conclude that
the record supports a conclusion of prima facie obviousness. We are not
persuaded of nonobviousness by Appellants’ assertion that Gibson did not
suggest the desirability of the modification. Gibson taught that
Appeal 2011-008374
Application 10/243,734

7
proteoglycanase inhibitors promote hair growth by suppressing the activity
of proteinase enzymes present in or near the dermal papilla, and/or the
connective tissue sheath of the hair follicle. (Gibson col. 6, ll. 30-35.)
Gibson taught that these inhibitors include hydroxamic acids, “such as” the
four compounds specifically excluded by the instantly claimed invention.
(Id. at ll. 45, 60-65.) Thus, the listed four compounds are merely examples
of hydroxamic acids useful for the invention, and by no means limits the
disclosure of hydroxamic acids to these examples. The Examiner found that
a skilled artisan would have found it obvious to have selected and used
additional hydroxamic acids in Gibson’s invention, including variants of the
disclosed examples, such as those variants that differed only by a methylene
group. (Ans. 8.) We agree with the Examiner. Such a selection would have
amounted to predictable variation as it involved the simple substitution of
one known member of the disclosed category of hydroxamic acids for
another. In In re Dillon, 919 F.2d 688 (Fed. Cir. 1990), the Federal Circuit
noted:
In brief, the cases establish that if an examiner considers that
he has found prior art close enough to the claimed invention
to give one skilled in the relevant chemical art the
motivation to make close relatives (homologs, analogs,
isomers, etc.) of the prior art compound(s), then there arises
what has been called a presumption of obviousness or a
prima facie case of obviousness. In re Henze, 181 F.2d 196,
37 CCPA 1009, 85 USPQ 261 (CCPA 1950); In re Hass,
141 F.2d 122, 127, 130, 31 CCPA 895, 60 USPQ 544, 548,
552 (CCPA 1944). The burden then shifts to the applicant,
who then can present arguments and/or data to show that
what appears to be obvious, is not in fact that, when the
invention is looked at as a whole. In re Papesch, 315 F.2d
381, 50 CCPA 1084, 137 USPQ 43 (CCPA 1963). The cases
of Hass and Henze established the rule that, unless an
Appeal 2011-008374
Application 10/243,734

8
applicant showed that the prior art compound lacked the
property or advantage asserted for the claimed compound,
the presumption of unpatentability was not overcome.

In re Dillon, 919 F.2d at 696. See also KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 416-417 (2007). Appellants have presented no such rebuttal
argument or evidence.
We are also not persuaded of nonobviousness by Appellants’ assertion
that variants of Gibson’s exemplary hydroxamic acids may not have
maintained “the strong proteoglycanase inhibition that is required by
Gibson” (App. Br. 8-9) as that is merely attorney argument unsupported by
factual evidence. See In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974).
Accordingly, we affirm the obviousness rejection of claims 1, 8, 12,
and 18.
SUMMARY
We affirm the rejection of claims 1, 8, 12, and 18 under 35 U.S.C. §
112, first paragraph, as failing to comply with the written description
requirement;
we reverse the rejection of claims 1, 8, 12, and 18 under 35 U.S.C. §
112, first paragraph, as lacking enablement;
we reverse the rejection of claim 18 under 35 U.S.C. §102(b) as
anticipated by Gibson; and
we affirm the rejection of claims 1, 8, 12, and 18 under 35 U.S.C. §
103(a) as unpatentable over Gibson.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

Appeal 2011-008374
Application 10/243,734

9
AFFIRMED

cdc